Can alternative elements disclosed in the specification be excluded in the claims?
Yes, alternative elements disclosed in the specification can be excluded in the claims through negative limitations. The MPEP 2173.05(i) states:
“If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”
This principle is based on the reasoning that if the specification describes the whole, it necessarily describes the parts that can be excluded. The MPEP cites the case of In re Johnson, which established that “[the] specification, having described the whole, necessarily described the part remaining.”
It’s important to note that the applicant doesn’t need to articulate advantages or disadvantages of each feature in the specification to later exclude alternative features in the claims. The Inphi Corporation v. Netlist, Inc. case confirmed this approach.
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